India: Comments On The Prescribed Draft Of Amendments To Patent Rules

Last Updated: 20 December 2018
Article by Khurana And Khurana

 The patents rules can be amended by the virtue of section 159 of the Patent Act 1970, the following changes were proposed by the Central government on 4th of December 2018 through the Department Of Industrial Policy And Promotion.

1. The notification takes the title of the rules to be amended to Patents (Amendment) Rules, 2018.

2. Rule 18 which is regarding the appropriate office in relation to international applications, the rules clarifies that it be the designated office ,receiving office and elected office in case of international application. The following are proposed to be the appropriate offices referred to in Rule 4:

  • Central government has proposed to add a proviso to the above stated rule sub rule (2) which says that the Delhi branch shall be the appropriate office for the handling of international searching authority functions.
  • The said proviso is mainly regarding reducing the paper usage, by submitting the originals to the patent officer in a scanned format exclusively by the electronic transmission which is authenticated.
  • Also before this amendment there was no time prescribed for submission of the required documents but now the prescribed time limit is 15 days, if not complied with the document shall be deemed to be have been not filed for the international application.
  • In order to make things more manageable, by giving the deadline for submission of the document will also aid; reducing the workload, exclusion of fraudulent practises by the parties, exclusion of fraudulent document at the preliminary stage itself.

3. Rule 24(C) is regarding the expedited examination wherein it is stated that expedited examination is possible in two scenarios. First, where India is selected as competent international searching authority and also elected as an international preliminary examining authority for PCT applications. And secondly, when the applicant is a startup According to the Patent (Amendment) Rules, 20171

However, the following is proposed by the draft of 2018:

  • The applicant can be a small entity defined in rule 2 (fa),
  • It gives clearer definition of small entity which comprises of enterprises engaged in the manufacture or production of goods pertaining to any industry. The following are being defined according to their pecuniary capacities as: micro enterprise, a small enterprise, a medium enterprise and also as enterprises engaged into providing or rendering of services in the same three categories as specified above.
  • This amendment strives to give a wider scope to the smaller enterprises by prescribing limitations in the form of pecuniary capacities of various small entities
  • Not only the start ups but also the small businesses are proposed to be provided with the opportunity to be eligible for early examination.
  • A subsequent clause states that in case of a natural person(s) applying for an early examination the condition prescribed is that either the applicant or at least one of the applicants is a female.
  • This said clause is broadening the scope for female inventors who aren't given their due credits for inventions. Thus this condition expresses a willingness to strengthen women empowerment in India
  • Also there are some adverse conditions that would arise due to the insertion of the said clause a man is explicitly declined his right to apply for an early examination if is not accompanied with a female applicant.
  • The applicant may also apply for an expedited examination if it fulfils the requirement of being a government undertaking, which is being defined under the patent act section 2(1): "Government undertaking" means any industrial undertaking carried on—
    (i) by a department of the Government, or
    (ii) by a corporation established by a Central, Provincial or State Act, which is owned or controlled by the Government, or
    (iii) by a Government company as defined in section 617 of the Companies Act, 1956 (1 of 1956), or
    (iv) by  an  institution wholly  or  substantially  financed  by  the Government;
  • This clause is not only for Indian applicants but is also applicable to the foreign applicants, broadening the application gateway and making it uniform for all the applicants.
  • The examination can also be expedited when the Indian patent office is having an agreement with some other patent office, the applicant will be eligible for the processing of the early examination, although the requisites of the Act would have to be followed as a standard.
  • Clause 4 of the said rule says that if the if the application does not fall under any of the categories required then the application will be processed according to Rule 24(B) which is the regular procedure of application for examination, the said amendment has proposed that if such requirements as mentioned are met before issuance of FER, the application shall be processed for expedited examination in accordance with the provisions of rule 24-C
  • The said proviso gives the parties a chance of including themselves under any of the stated requirements to get the advantage of the early examination by applying under 24 (C) before FER is issued.

4. Rule 55 which is with regards to opposition to the patent, sub rule 2 it is regarding the function of the controller the proviso added states the changes required in the composition of controller.

  • The change prescribes for the controller to constitute a bench of two people who shall dispose the application jointly and the proviso added states that if the two disagree on any application the controller shall assign a third party for the final decision.
  • Also the wording is proposed to be changed from "controller" to "bench" in the subsequent sub rules 3 and 5 of the clause.

5. All the other changes were made in the first schedule with regards to the entry no. 48 and 48 A and the addition of transmittal fees for international application (for e PCT filing) since all the documents are proposed to be transmitted in electronic format from now on.

6. Further 49 A is regarding the preparation of certified copy of priority document and e-transmission through WIPO DAS.

7. All the other changes made in the schedule are the manifestation of the above mentioned changes in the expedited examination essentials in their respective forms.

Footnote

1 http://www.egazette.nic.in/WriteReadData/2017/180577.pdf

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